Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/29/2024, 11/14/2024, 6/4/2025, 10/6/2025, and 1/21/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I (Golf embodiment) in the reply filed on 3/13/2026 is acknowledged. The traversal does not include any argument against the restriction requirement. Thus, the requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,008,839.
Claim 1 recites a system configured for performing object fitting recommendations in connection with an online system (see lines 1-2 of claim 1 of the patent), the system comprising: one or more hardware processors (see lines 2-4 of claim 1 of the patent); and a memory configured for storing instructions, which when executed, cause the system to (see lines 5-6 of claim 1 of the patent): receive, from a user device, a sequence of 2D images of a user's movement using a first object (see lines 7-8 of claim 1 of the patent); analyze the sequence of 2D images to generate 3D data of the user's movement (see lines 9-10 of claim 1 of the patent); perform a quantitative, biomechanical-based analysis of the user's movement from the 3D data to generate biomechanical values (see lines 11-13 of claim 1 of the patent); compare the biomechanical values to target values and known biomechanical capabilities to determine a recommendation for a second object (see lines 14-16 of claim 1 of the patent); and display information about the second object on a graphical user interface with an actionable display element from which the second object can be selected for purchase (see lines 17-20 of claim 1 of the patent).
Claim 2 (see claim 2 of the patent);
Claim 3 (see claim 3 of the patent);
Claim 4 (see claim 4 of the patent);
Claim 5 (see claim 5 of the patent);
Claim 6 (see claim 6 of the patent);
Claim 7 (see claim 7 of the patent);
Claim 8 (see claim 8 of the patent);
Claim 9 (see claim 9 of the patent);
Claim 10 (see claim 10 of the patent);
Claim 11 (see claim 11 of the patent);
Claim 12 (see claim 12 of the patent);
Claim 13 (see claim 13 of the patent);
Claim 14 (see claim 14 of the patent);
Claim 15 (see claim 15 of the patent);
Claim 16 (see lines 21-24 of claim 1 of the patent);
Claim 17 (see claim 16 of the patent);
Claim 18 (see claim 18 of the patent);
Claim 19 (see claim 19 of the patent); and
Claim 20 (see claim 17 of the patent).
Although the claims at issue are not identical, they are not patentably distinct from each other. It is clear that all the elements of claims 1-20 are to be found in claims 1-19 of the patent. The different between claims 1-20 of the application and claims 1-19 of the patent is that claim 1 of the patent was amended with subject matter that is identical to the subject matter of claim 16 of the application. Therefore, the claims of the patent include more elements and are more specific than the claims of the application. Thus, the invention of claims 1-19 of the patent is in effect a “species” of the “generic” invention of claims 1-20 of the application. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-20 are anticipated by claims 1-19 of the patent, they are not patentably distinct.
Claim Objections
Claims 5, 18, and 20 are objected to because of the following informalities:
In claim 5 line 3, “record remotely record” should be changed to --remotely record--.
In claim 18 line 2, “recommended” should be changed to --to recommend--.
In claim 20 line 4, “club, impact data and/or post impact data” should be changed to --club--.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,506,425 (Wright et al., hereinafter “Wright”) in view of US 9,830,951 (Bose et al., hereinafter “Bose”).
Regarding claim 1, Wright discloses a system configured for performing object fitting recommendations in connection with an online system (after a golfer takes a golf swing with a golf club, performance parameters for the swing are measured and based on these parameters and previously established data, the golfer is matched with a particular golf club selected from a group of golf clubs having a plurality of styles - abstract), the system comprising:
one or more hardware processors 306 (Col 8:35-51); and a memory 320 configured for storing instructions (Col 9:33-36), which when executed, cause the system to:
receive, from a user device, a sequence of 2D images of a user's movement using a first object (dual camera system is used to capture the entire golf swing - Col 8:41-60);
analyze the sequence of 2D images to generate 3D data of the user's movement (three-dimensional optical analysis system 304 is employed - Col 8:41-51);
perform a quantitative, biomechanical-based analysis of the user's movement from the 3D data to generate biomechanical values (Col 9:51-62);
compare the biomechanical values to target values and known biomechanical capabilities to determine a recommendation for a second object (Col 10:58-67).
However, Wright does not disclose the system displays information about the second object on a graphical user interface with an actionable display element from which the second object can be selected for purchase.
Bose et al. teaches an analogous system configured for performing object fitting recommendations in connection with an online system (abstract) that has the system displaying information about the second object on a graphical user interface with an actionable display element from which the second object can be selected for purchase (For custom fitting equipment, such as putter shaft lengths, or any other custom sizing of any type of equipment, embodiments of the system may present an interface to enable user to order a customer fitted piece of equipment over the second communication interface of a mobile device. Embodiments of the invention also enable mobile device to suggest better performing equipment to user or to allow user to search for better performing equipment as determined by data mining of database for distances of golf shots per club for users with swing velocities within a predefined range of user - Col 48:46-61).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Wright et al. with the purchasing ability as taught by Bose et al. in order to allow the user to be presented with a custom fitted piece of equipment based on motion analysis data.
Regarding claim 4, modified Wright teaches the system of claim 1, and Bose further discloses wherein the online system comprises an online ecommerce server and a database of objects available via the online ecommerce server (Bose: may be implemented as a server of a vendor via the Internet - Col 48:46-50), wherein the instructions further cause the system to select the second object from a set of available objects (custom sizing of any type of equipment may be presented on the interface, which would involve multiple options to choose from - Col 48:46-61).
Regarding claim 5, modified Wright teaches the system of claim 1, and Bose further discloses wherein the user's movement comprises a golf swing and the first object is a golf club and the instructions further cause the system to: prompt the user to record remotely record via a user device and remotely transmit to an online server, one or more golf swings as the sequence of 2D images (Bose: mobile device 101 includes at least one camera 130 that can be instructed to obtain two-dimensional images of the user during a golf swing - Col 41:57 to 42:3; the data from any sensor type, or event data from analysis of sensor data may be stored in a database and transmitted from mobile device 101 to network 170 or Internet 171 and to database 172 - Col 40:13 to 41:35).
Regarding claim 6, modified Wright teaches the system of claim 1, and Bose further discloses wherein the instructions further cause the system to add the second object to an electronic shopping cart upon a user selecting the actionable display element associated with the second object (Bose: user can purchase piece of equipment over the second communication interface of mobile device 101, for example via the Internet, or via a computer 105 which may be implanted as a server of a vendor - Col 48:46-50; it is well known in the art of online vendors for a website to provide an electronic shopping cart to allow a user to store selected items for purchase while the user is still shopping around for other items).
Regarding claim 7, modified Wright teaches the system of claim 1, and Wright further discloses wherein the instructions further cause the system to determine a recommendation for specific components for the second object (plurality of dissimilar golf clubs can be recommended with different weight shaft weight configuration or different shaft flex - Claims 1 and 3).
Regarding claim 8, modified Wright teaches the system of claim 7, and Wright further discloses wherein the second object comprises a golf club and the specific components comprise a shaft flex and a shaft kick point (plurality of dissimilar golf clubs can be recommended with different weight shaft weight configuration or different shaft flex - Claims 1 and 3; other specific components include kick point and torque - Col 6:60-63).
Regarding claim 9, modified Wright teaches the system of claim 7, and Wright further discloses wherein the second object comprises a golf club and the specific components comprise a shaft flex, a shaft weight and a shaft kick point (plurality of dissimilar golf clubs can be recommended with different weight shaft weight configuration or different shaft flex - Claims 1 and 3; other specific components include kick point and torque - Col 6:60-63).
Regarding claim 10, modified Wright teaches the system of claim 7, and Wright further discloses wherein the second object comprises a golf club and the specific components comprise a shaft flex and a shaft weight (plurality of dissimilar golf clubs can be recommended with different weight shaft weight configuration or different shaft flex - Claims 1 and 3; other specific components include kick point and torque - Col 6:60-63).
Regarding claim 11, modified Wright teaches the system of claim 7, and Wright further discloses wherein the second object comprises a golf club and the specific components comprise a shaft weight and a shaft kick point (plurality of dissimilar golf clubs can be recommended with different weight shaft weight configuration or different shaft flex - Claims 1 and 3; other specific components include kick point and torque - Col 6:60-63).
Regarding claim 12, modified Wright teaches the system of claim 1, and Wright further discloses wherein the instructions further cause the system to make a quantitative biomechanical-based analysis of observed actions and a predetermined set of relationships between swing pattern components and object parameters (The method involves performing an initial cluster analysis of various objective measurements of golfers’ golf swings so as to correlate basic performance parameters with basic swing types and golf club preferences. After the initial classifications have been made, the initial classifications are further analyzed so as to correlate more specific performance parameters and with more specific swing types and golf club preferences, such as, for example, shaft flex, and weight - Col 3:38-48).
Regarding claim 13, modified Wright teaches the system of claim 12, and Wright further discloses wherein the swing pattern components comprise golf swing speed, transition style, and/or release style (five different performance parameters are used to characterize a golfer’s swing style including (1) rate of change of Theta-2 at the end of the downswing, (2) elevation angle of the backswing plane, (3) handicap, (4) peak-to-peak vertical movement of the mid-hands during the backswing, and (5) maximum shaft deflection - Col 9:51-62; Other suitable swing-related parameters include: (1) speed of the center of the face of the club head at impact, (2) peak hand-speed during the downswing, (3) time duration of the downswing, (4) elevation angle of the back-swing plane of the center of the face of the club head, (5) peak-to-peak vertical movement of the mid-hands during the downswing, and (6) time at which the shaft’s kick deflection is zero. Other suitable non-swing parameters include: (1) the golfer’s weight and (2) the golfer’s height - Col 10:45-57).
Regarding claim 14, modified Wright teaches the system of claim 12, and Wright further discloses wherein the object parameters comprise one or more of a golf club shaft weight, shaft flex or kick point (The method involves performing an initial cluster analysis of various objective measurements of golfers’ golf swings so as to correlate basic performance parameters with basic swing types and golf club preferences. After the initial classifications have been made, the initial classifications are further analyzed so as to correlate more specific performance parameters and with more specific swing types and golf club preferences, such as, for example, shaft flex, and weight - Col 3:38-48).
Regarding claim 15, modified Wright teaches the system of claim 12, and Wright further discloses wherein the swing pattern components comprise golf swing speed, transition style, and/or release style (five different performance parameters are used to characterize a golfer’s swing style including (1) rate of change of Theta-2 at the end of the downswing, (2) elevation angle of the backswing plane, (3) handicap, (4) peak-to-peak vertical movement of the mid-hands during the backswing, and (5) maximum shaft deflection - Col 9:51-62; Other suitable swing-related parameters include: (1) speed of the center of the face of the club head at impact, (2) peak hand-speed during the downswing, (3) time duration of the downswing, (4) elevation angle of the back-swing plane of the center of the face of the club head, (5) peak-to-peak vertical movement of the mid-hands during the downswing, and (6) time at which the shaft’s kick deflection is zero. Other suitable non-swing parameters include: (1) the golfer’s weight and (2) the golfer’s height - Col 10:45-57) and the object parameters comprise one or more of a golf club shaft weight, shaft flex or kick point (The method involves performing an initial cluster analysis of various objective measurements of golfers’ golf swings so as to correlate basic performance parameters with basic swing types and golf club preferences. After the initial classifications have been made, the initial classifications are further analyzed so as to correlate more specific performance parameters and with more specific swing types and golf club preferences, such as, for example, shaft flex, and weight - Col 3:38-48).
Regarding claim 17, modified Wright teaches the system of claim 1, and Wright further discloses wherein the user's movement is a golf swing and the first object is a first golf club and the second object is a second golf club (during the testing, the tested golfers were tested with up to eight different styles of golf clubs - Col 4:56-65), the system further comprising a database of historical data that correlates golf swings and performance associated with the golf swings, including a resulting distance and/or accuracy of the golf swings (Col 5:44-52).
Regarding claim 18, modified Wright teaches the system of claim 1, and Wright further discloses wherein the instructions further cause the system to assess actual results of a user swinging a first golf club and recommended a second golf club based on a projected performance of the user swinging the second golf club (Col 10:58 to 11:16).
Regarding claim 19, modified Wright teaches the system of claim 1, and Wright further discloses wherein the instructions further cause the system to provide a recommendation based on predetermined relationships of identified object parameters and quantitative measurements of a user's performance during different portions of the user's movement during performance of an activity (Col 10:58 to 11:16).
Regarding claim 20, modified Wright teaches the system of claim 17, and Wright further discloses wherein the instructions further cause the system to provide a recommendation based on predetermined relationships of identified golf club parameters and quantitative measurements of a user's performance during different portions of the user's golf swing prior to impact of a golf club, impact data and/or post impact data (Col 10:58 to 11:16).
Allowable Subject Matter
Claims 2-3 and 16 would be allowable if rewritten to overcome the nonstatutory double patenting rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA S LEE whose telephone number is (571)270-1661. The examiner can normally be reached Monday-Friday 11am-7pm Eastern.
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/Joshua Lee/Primary Examiner, Art Unit 3784
Prosecution Insights